Tania Kern is a member of the Paris Bar. She acquired the title of Intellectual Property Specialist in 2002. Founding partner of the Kern & Weyl law firm, she is Consultant of CastaldiPartners in the frame of the Intellectual Property Alliance.
Career
Tania Kern started her career in 1997 with an attorney specialized in Intellectual property litigation. She than joined the IP Group of Baker & McKenzie in Paris, where she practiced for more than 13 years. Tania Kern is handling all kinds of IP litigations including trademarks, patents, designs and copyright litigations before civil and criminal courts. She has developed extensive experience in national and multi-jurisdictional anti-counterfeiting programs in collaboration with the Customs Authorities. She is particularly qualified in transnational matters and has pleaded before the Court of Justice in Luxembourg in a trademark related matter referred to by the French Supreme Court.
In addition to litigation, she handles all kind of IP related and unfair competition matters with a focus in contracts and R&D. She represents companies involved in various industries or fields of activity among others fashion, sport, games, hotels, cosmetics and the pharmaceutical industry. She is a member APRAM and AIPPI. She works in French and English and speaks Germain.
Representative Matters
- Assistance of a US fashion group in relation to sales of counterfeit products among others on internet.
- Advising a French luxury fashion house on the way to improve anti-counterfeiting strategies.
- Assistance of a sportwear company in the registration of an application for action based on trademarks with the French customs authorities.
- Defending the creations (copyright and designs) of a very successful Spanish fashion brand.
- Filing action in the name of a famous French company in the field of luxury swimsuits and underwear to obtain the cancellation for non-use of a French trademark.
- Defending a French trademark owner operating in the wine and spirits sector regarding the scope of protection of one of its trademarks during the first five years period after trademark registration in Case C-622/18 before the Court of Justice in Luxembourg.
- Successfully defending an Italian company manufacturing extruded plastic flexibles sued for patent infringement.
- Successfully defending a French company in the course of a patent and unfair competition litigation in the field of dry ecological toilets.
- Assisting a US global leading developer and manufacturer of pre-hospital medical gear for the tactical and civilian world in its fight against counterfeit products.
- Assistance of a french group of companies in the drafting and implementation of an intra-group trademark licence agreement.
- Assistance of a R&D French company in the field of beauty products and medical devices in the drafting and the negotiation of R&D, confidentiality, collaboration, patent licenses agreements and co-ownership patent agreements.
- Assisting a French hotel group in a pre-litigation case regarding the services of well-known Italian designers (architecture and furniture design).
- Advising a French company acting in the field of complex e-commerce websites development in the negociation of contrats and licences.
Speaking Engagements
- The new Trademark Law, Université de Nantes, 2019.
- Criminal issues on trademarks in particular on fashion trademarks during the “Italy meets France in IP - A story of food and fashion”, AIPPI Lyon, 2019.
- Seminar about customs and anti-counterfeiting organized in Paris by the Forum Institut für Management GmbH, 2014.
- Tania Kern regularly takes part in seminars and conferences on intellectual property and the fight against counterfeits.
Publications
- "Les marchandises contrefaisantes: Identifier Réagir Lutter" (Counterfeit goods: Identify, React, Fight back), by Wolters Kluwer - Lamy, December 2010.
- Tania Kern contributes to the IP section of the Guide of Customs Procedures"published by Wolters Kluwer since 2009.
- Tania Kern regularly publishes articles related to intellectual property law.
Academic Activities
- Lecturer at Centre for International IP Studies (CEIPI) - Strasbourg University, during the CEIPI Summer School on IP in Europe since 2010 and at the Nantes University since 2013
Awards
She was elected in 2016 by Lawyer Monthly in the course of their Women in Law awards as the Intellectual Property Specialist of the year for France.Education
- Université de Paris II Assas, DESS en Propriété Industrielle, 1995
- Université de Paris I Panthéon Sorbonne, DEA de droit Anglais et Américain des Affaires,1994
- Université Robert Schuman Strasbourg, Maîtrise en droit des affaires et Certificat de droit Européen des Affaires, 1993
- Leiscester University, Certificate of English legal studies, 1992
